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October 17, 2013

Our
colleagues at J.A. Kemp in the United Kingdom have advised us that they have
received advance notice that the administrative council of the European Patent
Office (EPO) has voted to amend Rule 36 EPC to remove the controversial
24-month time limit within which European divisional applications may be
filed. The sole criterion set forth in
amended Rule 36(1) EPC will be that the application to be divided must still be
pending. In practice this means that any case that is not granted or
finally refused can be divided once the new rule comes into force.

The
amended rule is set to come into force on 1 April 2014.

Under
the current rules, which came into force 1 April 2010 for applications filed
after that date provided that applicants may divide their European patent
application within 24 months of the first office action (or notice of
allowance) or within 24 months of a new lack of unity objection being raised.

The
amended rule will come into effect for all divisional applications filed on or
after 1 April 2014, and so in some cases will serve to reopen previously closed
divisional application filing windows. Applicants wishing to file a
divisional application in a case where the term under existing Rule 36 has
expired may now wish to keep their application pending at least until 1 April
2014 and file one or more divisional applications then.

Simultaneously
with this rule change, the EPO intends to introduce a new additional filing fee
that applies to divisional applications of second generation or higher.
Although the level of the fee has not yet been set, it is expected to be
of a low to moderate level, in the range of 200-800 Euros, and is expected to
increase with successive generations.

Patent
Docs thanks Tim Duckworth of J A Kemp for alerting us to this recent
development. Readers wishing further
clarification can contact J A Kemp directly at www.jakemp.com.

For additional information regarding this and other related topics, please see: